In Europe, publication of photos by Rihanna is used as an argument to invalidate the registration of a sneaker design

In Europe, publication of photos by Rihanna is used as an argument to invalidate the registration of a sneaker design

In a recent decision, the European Union Intellectual Property Office (EUIPO) ruled that a sneaker model did not meet the novelty requirement, annulling its registration as an industrial design (ID). The court found that posts made by singer Rihanna on a social network using the product 2 years before the application for registration showed that the model had already been made public.

The case involved a well-known sneaker company, which applied for industrial design protection for one of its models before the EUIPO in 2016. In 2019, another competing company applied to the EUIPO for a declaration that the registration was invalid due to lack of novelty. In support of its argument, the competitor presented posts from Rihanna’s social media account from December 2014, showing her wearing a pair of shoes identical to the model in question.

Thus, in the decision, EUIPO first examined that the assessment of whether a design has an individual character must be carried out in relation to one or more previous designs, considered individually among all the designs that have previously been made available to the public. That said, it was established that the features of the sneaker worn by Rihanna were indeed identical to the ID model under examination.

The court carried out an analysis to determine the existence of prior disclosure of the design. It then noted that: (i) all the images posted on Rihanna’s social network, due to their quality and position, made it possible to identify all the features of the sneaker design with the naked eye or by enlarging the photos; and (ii) at the time of the images, Rihanna was already known worldwide.

It also assessed that the disclosure took place before the so-called “grace period”, an exception in the law that preserves the novelty of the IP for registration purposes within the EU, if the disclosure takes place within the 12 months preceding the date of filing the application for registration of the ID. As the disclosure took place two years before the filing, this exception did not apply. It was decided that the ID was null and void.

The Brazilian Industrial Property Law also adopts the requirement of absolute novelty for the protection of the ID and its exception, the “grace period”, which is only 180 days.

The decision can be accessed via the link: Case T‑647/22

Note: For quick release, this English version is provided by automated translation without human review.